India: Supreme Court Reiterates: An Injunction Must Follow Improper Use
Recently, in the case of Renaissance Hotel Holdings Inc. V. B. Vijaya Sai And Ors., the Supreme Court of India held that with regards to an infringement claim, an injunction should be granted once the Plaintiff has successfully established that the Defendant is improperly using the Plaintiff’s trademark. Delving into further issues such as whether there is a likelihood of confusion is not the appropriate approach in matters where the marks in question are identical and used in respect of identical goods or services.
Background
In 2009, the Plaintiff had filed a claim seeking permanent injunction against the Defendants to restrain them from using the trademark “SAI RENAISSANCE” or any other trademark identical with their trademark “RENAISSANCE”. The Plaintiff, a company incorporated under the laws of Delaware, United States of America and a renowned name in the hospitality industry, claimed that it has been using the trademark “RENAISSANCE” in India since 1990 and that they operate convention centers in Mumbai and Goa. They also stated that they are the owners of the domain name www.renaissancehotels.com and the registered trademark “RENAISSANCE” in India.
They further claimed that they came across a website www.sairenaissance.com and upon further investigation, they discovered that the Defendant had been operating two hotels under the name “SAI RENAISSANCE”. The Plaintiff alleged that the Defendants had copied their trademark “RENAISSANCE”, its stylized representation, signage, business cards and leaflets with the intention of suggesting an affiliation, or association with the business of the Plaintiff, thus claiming trademark infringement.
The Defendants argued that the suit was liable to be dismissed as a result of the delay or acquiescence on the part of the Plaintiff. They also argued that “RENAISSANCE” is a generic word and no exclusive rights can be claimed over it, especially since it is not a well-known brand in India. The Defendants also argued that the class of customers to which they were catering was totally different from the Plaintiff’s customer base.
The Trial Court found in favor of the Plaintiff restraining the Defendants from using the mark “SAI RENAISSANCE” or any deceptively similar mark. Aggrieved by this decision, the Defendant appealed to the High Court.
Setting aside the Trial Court’s decision, the High Court was of the view that the Plaintiff had not established trans-border reputation and neither had the Plaintiff provided any evidence to prove that the Defendants were taking unfair advantage of its trademark or that the use of the word “SAI RENAISSANCE” was detrimental to the distinctive character or reputation of the Plaintiff’s trademark.
Furthermore, aggrieved by the High Court’s decision, the Plaintiff appealed the matter to the Supreme Court.
The Decision
The Hon’ble Supreme Court explained that as per statutory provisions, once a trademark has been validly registered, it gives the registered proprietor exclusive usage rights in relation to the goods or services in respect of which the trademark has been registered. It further stated that this right follows the right to claim infringement. The Court stated that, “The legislative scheme is clear that …when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public.”
Moreover, the Court also explained that “the action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods.”
The Court also enumerated that, “In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated.”
Next, it is pertinent to note that the Court also observed that the High Court had erred by entering into the discussion of whether there was a likelihood of confusion or not. This is because once it is found that the trademark is identical, there is no need to delve into whether there is a likelihood of confusion or not. It is also noteworthy that in this regard the Court also stated that, “In an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the trade mark of the plaintiff.”
Therefore, the Supreme Court set aside the decision by the High Court and allowed the appeal, maintaining the decision made by the Trial Court.
Conclusion
To conclude, through this case, the Supreme Court has affirmed integral principles of trademark law. It is noteworthy that the decision clarifies that once it has been established that the marks in question are identical, there is no need to establish a likelihood of confusion in the minds of the consumers. It is also important to note that an order of injunction must follow in order to restrain the defendants/respondents from indulging in any further infringing conduct.
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